Monthly Archives: January 2013

Post navigation

WASHINGTON — A long-simmering trade conflict between the United States and Antigua and Barbuda appears to be boiling over.

Antigua and Barbuda, which has a $1 billion economy, is planning on getting legal retribution from the United States’ $15 trillion economy over its refusal to let Americans gamble at online sites based in the Caribbean nation — perhaps by offering downloads of American intellectual property, like Hollywood films, network television shows or hit pop songs. On Monday, the World Trade Organization gave its go-ahead for Antigua and Barbuda’s tentative plan.

“The economy of Antigua and Barbuda has been devastated by the United States government’s long campaign to prevent American consumers from gambling,” Harold Lovell, Antigua’s finance minister, said in a statement. “These aggressive efforts to shut down the remote gaming industry in Antigua have resulted in the loss of thousands of good-paying jobs and seizure by the Americans of billions of dollars belonging to gaming operators and their customers.”

The conflict’s roots are a decade old. The World Trade Organization said that the United States had violated its trade agreements by preventing Americans from betting at sites based in Antigua and Barbuda. Because Washington is unwilling to make the betting legal, the countries have been locked in a dispute over what constitutes fair trade practices and fair compensation.

The online gambling industry was at one point the second-largest employer in the Caribbean country, its government has said, and economists estimated its worth at $3.4 billion. Gambling employment has dropped to fewer than 500 people from more than 4,000 as a result of the United States’ trade policy, it said.

On Monday, a dispute settlement body in Geneva gave Antigua and Barbuda the nod to, in essence, violate American intellectual property rights to make up its losses, calculated at $21 million a year.

It remains murky just how the Antigua and Barbuda government might go about it. But trade watchers suggested it might set up a site where viewers could pay a pittance to watch a film or television show with an American copyright. The United States might not be able to shut the site down under international law.

“We are disappointed with Antigua and Barbuda’s decision to abandon constructive settlement discussions,” Nkenge Harmon, a spokeswoman for the United States trade representative, said in an e-mail. “As recently as Friday, our two countries held high-level discussions on possible settlement options that would have brought real benefits to Antigua’s businesses and people.”

The Obama administration said that the proposed plan might further hurt trade relations between the two countries.

“If Antigua does proceed with the unprecedented plan for its government to authorize the theft of intellectual property, it would only serve to hurt Antigua’s own interests,” Ms. Harmon said. “Government-authorized piracy would undermine chances for a settlement. It also would serve as a major impediment to foreign investment in the Antiguan economy, particularly in high-tech industries.”

Trade experts said that Antigua and Barbuda’s plan for retribution seemed designed to provoke American filmmakers and recording artists into pushing for Congress to allow foreign Internet gambling sites to serve American customers.

They also noted that it was the United States that had pushed for the unusual “cross-retaliation” mechanism at the W.T.O., where trade violations that hurt one industry could be countered with trade actions against a completely different industry.

“The irony is rich, rich, rich,” said Lori Wallach, the director of Global Trade Watch at Public Citizen, a Washington-based consumer advocacy group.

“The practical question is, Is there a majority in the House and Senate to vote to revoke the ban, and would Congress do it because the W.T.O. told them?” she said, saying it was unclear how the two countries would proceed.

The cost of submitting trademarks to the forthcoming Trademark Clearinghouse will start at $150 per year, the Clearinghouse operator has revealed.

In a complex fee structure documents released this morning, the Clearinghouse outlines a range of discounting schemes that could reduce the cost to as little as $95 a year for big volume users.

But it looks like it’s going to be quite difficult to qualify for really substantial discounts.

Marks submitted to the Clearinghouse will eligible for the Trademark Claims service, which alerts the owners if someone registers a matching domain name, and may be eligible for new gTLD Sunrise periods.

The fees outlined today cover both services, though new gTLD registries will of course charge their own Sunrise fees on top of what the Clearinghouse asks.

The documents break down two types of pricing: basic credit card payments (for people with 10 trademarks or fewer) and advanced prepayment pricing, which is reserved for “agents”.

Agents will in most cases be digital brand management companies (think Melbourne IT or Markmonitor) but the Clearinghouse tells us that trademark owners can also become agents if they pre-pay.

The basic, credit-card tier costs $150 per year for a single trademark. The cost is reduced to $145 per year if the trademark owner registers the mark for three or five years.

The prepaid advanced tier is rather more complicated, based on the number of “status points” customers rack up.

A status point is earned for each trademark-year registered, with bonus points awarded for multi-year registrations and registrations made in a special “early bird” period (before the first-to-launch new gTLD’s Sunrise period begins).

Excluding these bonuses, agents would have to register over 100,000 trademark-years in order to qualify for $95-a-year pricing, which is the lowest available.

Multi-year registrations would make make the discounts kick in earlier, but only after certain milestones are passed.

The Clearinghouse document gives this example:

If you register the first 3,000 trademarks for a single year, they will be charged at 145 USD per registration. The next 22,000 will be charged at 135 USD. The next 35,000 registrations will be charged at 120 USD. For 60,000 registrations you will have paid 435,000 + 2,970,000 + 4,200,000 USD, or an average price of 126.75 USD

Smart agents will likely want to register their multi-year marks first, in order to earn bonus points and more quickly qualify for the cheaper rate on their single-year registrations.

Whether agents pass on their discounts to their customers is another matter entirely.

The Clearinghouse fees will be calculated based on the number of trademarks submitted, rather than the number of domain names matching those trademarks.

Each mark will automatically get up to 10 matching domain names entered into the database. If your trademark is “Joe’s Autos” your matching domain strings could be “joesautos”, “joes-autos” and even “joe-s-autos”.

Trademark owners will have to pay an extra dollar per year for each matching domain beyond 10.

The Clearinghouse — operated by Deloitte with a back-end provided by IBM — still plans to launch later in the first quarter this year.

In August 2012, the Australian Law Reform Commission (ALRC) published the Copyright and the Digital Economy Issues Paper (Issues Paper), inviting responses to a series of questions to assist its inquiry into whether the Copyright Act 1968 (Cth) (Act) is adequate and appropriate in the digital environment.

The Department of Treasury and Finance coordinated the Victorian Government’s response to the Issues Paper, available here

The Victorian Government’s submission was prepared in consultation with all departments and relevant agencies. It was approved by the Assistant Treasurer, as the Minister responsible for the Intellectual Property Policy.

The key aspects of the Victorian Government’s submission include that:

• the statutory licensing scheme concerning the use of copyright material by the Crown in the Act is appropriate;

• the statutory licensing scheme has a number of inadequacies which can make its application complex, uncertain or inflexible, creating high costs and inefficiency for the Victorian Government;

• the Act should be amended to address these inadequacies and improve the statutory licensing scheme;

• the Act fundamentally impedes the Victorian body administering archives, the Public Record Office Victoria (PROV), in digitising records and making them available online;

• the Act should be amended to allow greater digitisation and communication of works by or on behalf of PROV; and

• the current legislative regime for orphan works poses significant restrictions to the use of, access to and dissemination of records by PROV and should be amended.

WASHINGTON – The US Department of Commerce’s United States Patent and Trademark Office (USPTO) announced the release of a new calculator that enables members of the public to estimate the expiration date of a utility, plant, or design patent. According to the Office, the calculator can be downloaded at http://www.uspto.gov/patents/law/patent_term_calculator.jsp.

“This new calculator is another educational tool we’re providing to our nation’s innovators and entrepreneurs,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “In conjunction with the Intellectual Property (IP) Awareness Assessment Tool we released in March, the calculator can help manufacturers, small businesses, entrepreneurs, and independent inventors assess and improve their knowledge of IP.”

The calculator provides a best estimate of a patent’s expiration date, based on a comprehensive list of factors than can be found in USPTO records. Before relying on an expiration date, individuals should always carefully inspect all relevant documents available through the USPTO, court records and elsewhere, and consult with an attorney.

A trademark is a word, logo, sound, shape, color or any combination that distinguishes the goods or services of one party from another. The development of a strong trademark is a valuable business asset that promotes customer goodwill, increases customer satisfaction and improves sales.

The validity of a trademark is not established by the registration of the mark with the United States Patent and Trademark Office, but by the strength of the trademark and its use in commerce. A strong trademark provides immediate protection of the mark upon its first use in commerce because these marks are presumed to be distinctive.

The strongest types of trademarks are “fanciful” trademarks, such as Kodak, Verizon, Xerox and Oreo, which often had no meaning prior their creation. These marks do not suggest or describe the identity of the product or service, and they are immediately protected once they are used in commerce.

“Arbitrary” trademarks include words that are unrelated to the class of the product or service that is being marketed, such Apple computers. These marks provide immediate protection upon the first use of the mark in commerce regardless of registration.

“Suggestive” trademarks suggest an attribute of the product without being an outright description. Greyhound for a bus line, Coppertone for suntan lotion and Roach Motel for cockroach traps are suggestive trademarks. Suggestive marks are also immediately valid and protectable once the mark is first used in commerce.

The weakest trademarks are “descriptive” and “generic” marks. Descriptive trademarks simply identify a product’s attributes, such as Computerland. These types of marks are not provided immediate protection and cannot be registered with the United States Patent and Trademark Office because these marks are not inherently distinctive. To merit protection, descriptive marks must acquire a secondary meaning, which means that, in the eyes of the public, the primary significance of the trademark is to identify the source of the product rather than the identification of the product itself. For example, both Kentucky Fried Chicken and Chap-stick were denied initial registration because these marks are merely descriptive; “Kentucky” is a geographical region and “fried” merely describes how the chicken is prepared.

“Generic” trademarks merely describe the product class, such as toothpaste, chocolate and bread, and cannot be protected.

Therefore, we encourage you to create a strong trademark, such as a fanciful, arbitrary or suggestive mark, which provides immediate protection for your product or service upon its first use in commerce. We highly suggest that you avoid creating a descriptive or generic trademark.

AbbVie, based in North Chicago, Illinois, contends Mumbai- based Sun intends to market a low-cost version of the drug before patent 5,597,815 expires in 2016, according to papers filed Jan. 24 in federal court in Wilmington, Delaware.

“Plaintiffs will be substantially and irreparably damaged and harmed” if the infringement isn’t stopped by a judge, AbbVie said in its complaint.

Abbott spun off AbbVie to let investors choose between a medical products company that makes devices, diagnostics and nutrition products, and AbbVie, a drugmaker based largely around Humira, a best-selling rheumatoid arthritis injection that generated $7.93 billion in 2011.

Uday Baldota, a Sun spokesman, didn’t immediately respond to an e-mail seeking comment on the lawsuit.

The case is AbbVie v. Sun, 13-cv-00138, U.S. District Court, District of Delaware (Wilmington).

Trademark

NFL Harpoons ‘Harbowl,’ ‘Harbaugh Bowl’ Trademark Applications

An Indiana man who filed applications last year to register “Harbowl” and “Harbaugh Bowl” as U.S. trademarks said he abandoned his applications in response to pressure from the National Football League, ESPN reported.

Roy Fox of Pendleton, Indiana, filed his applications with the U.S. Patent and Trademark Office in February 2012, in anticipation that the brothers Jim and Harbaugh, who, respectively, coach the San Francisco 49ers and the Baltimore Ravens, might go head to head at this year’s Super Bowl game, according to ESPN.

He said he was contacted by the league even before the season started, and was told that the NFL feared the marks could be confused with its own, and that he had no affiliation with the Harbaugh brothers, whose teams are set to compete in the Feb. 3 Super Bowl, ESPN reported.

The applications are now abandoned, and Fox said that the league didn’t respond to his requests to compensate him for the costs of filing the applications and for season tickets to the Indianapolis Colts games and an autographed photo of NFL Commissioner Roger Goodell, according to ESPN.

He was accused of selling fake goods at a flea market in Kenner after an undercover investigator bought what turned out to be a fake NFL jersey, according to the Times-Picayune.

Fake Nike, NFL, and NBA goods were also found in a raid at the seller’s home, the Times-Picayune reported.

With the Super Bowl game set for Feb. 3 in New Orleans, the NFL typically ramps up trademark-enforcement efforts in the contending teams’ home cities and the city that is the site of the game, according to the Times-Picayune.

Subway’s Aussie Unit Says ‘Footlong’ Is Only a Trademark

Subway Restaurants’ Subway Australia unit responded to complaints that its “Footlong” sandwiches may measure less than 12 inches by saying “Footlong” is only a trademark, “a descriptive name,” ABC News reported.

Subway Australia said in a posting on its page on Facebook Inc.’s social media site that “Footlong” is “not intended to be a measurement of length,” according to ABC News.

An Australian Subway customer posted a photo of his “Footlong” sandwich that was only 11 inches long to Subway Australia’s Facebook page, with the note “subway pls respond,” ABC News reported.

Subway said in a statement to ABC News that although the company is committed to supplying a consistent product, “length however may vary slightly when not baked to our exact specifications.”

Copyright

UMG Fails to Win Dismissal of ‘Dancing Baby’ Copyright Suit

Stephanie Lenz of Gallitzin, Pennsylvania, sued the music company in July 2007 after Google Inc.’s YouTube video-sharing site removed a video she posted. Universal had objected to Lenz’s use of Prince’s song “Let’s Go Crazy” to accompany her brief piece showing her toddler dancing, and filed a takedown request under the Digital Millennium Copyright Act.

She claimed that copyright law’s “fair use” provision permitted her use of the music.

In March 2012 the court ruled that Lenz — who is being assisted by the San Francisco-based digital-rights group Electronic Frontier Foundation — didn’t file the suit in bad faith. Universal at that time had also asked for a dismissal of the case.

In a Jan. 24 ruling, U.S. District Judge Jeremy Fogel rejected the music company’s request to dismiss the case. He said that Universal has failed to establish that Lenz is barred from collecting damages if she prevails in her claim that her use of the music fell within the boundaries of fair use.

He said, however, that she failed to demonstrate any damages based on the loss of YouTube’s hosting services and the chilling of her free speech.

The case is Lenz v. Universal Music Group Inc., 5:07- cv-03783-JF, U.S. District Court, Northern District of California (San Jose).

Unlocking Phone to Change Wireless Carriers Limited by U.S. Rule

Beginning Jan. 26, U.S. consumers were not to be allowed to unlock new mobile phones purchased from wireless providers, under a change in U.S. rules backed by carriers led byVerizon Wireless and AT&T Inc. (T)

The Library of Congress’s Copyright Office, as part of a periodic review, said altering software to let one carrier’s phones work on other networks wouldn’t be among activities that expressly permitted under copyright law. The rule change was announced last October.

CTIA-The Wireless Association, with members including the four largest U.S. mobile carriers — Verizon, AT&T, Sprint Nextel Corp. (S) and T-Mobile USA Inc. — had argued that “locking cell phones is an essential part of the wireless industry’s dominant business model” involving handset subsidies and contracts, Librarian of Congress James Billington said in the notice.

Consumers can still choose to buy unlocked phones that will work with multiple carriers, giving them an alternative, Billington said. Partly because of that possibility, unlocking newly purchased phones doesn’t merit an exemption under copyright law, he said. Consumers who bought phones before the change can unlock their handsets, according to the rule change.

The new restriction represents a misuse of copyright law, Sherwin Siy, a vice president with the Washington-based policy group Public Knowledge, said in an interview.

The change removes legal protection that has allowed consumers to unlock their phones and doesn’t explicitly make the act illegal, Mitch Stoltz, a staff attorney with the Electronic Frontier Foundation, a San Francisco-based advocacy group, said in an interview.

“You will not have this shield in the event you’re sued,” Stoltz said. “It may go to court some time, and then it will be up to a judge.”

CTIA said in a filing with Library of Congress that subsidies “depend on ensuring that the handset will be used, as contemplated, with the carrier’s service.”

Circumventing barriers to unauthorized use “will have significant adverse effects on the wireless industry and on the public,” the Washington-based trade group said in its February 2012 filing.

BANGALORE: IT Services firms that invest in Intellectual Property (IP)-based offerings will experience accelerated growth in the next 24 to 36 months, said a study conducted byConstellation Research. It shows a staggering 80% of clients surveyed prefer ‘outcomes’ rather than technologies or solutions from IT service providers. The resulting demand-side dynamics of this preference will compel services firms to focus on IP versus vanilla offerings.

This “Big Idea” report titled, Clients Want Outcomes, Are Indian IT Services Vendors Ready,” explores the future of the IT services market and helps buyers understand what to expect from Indian IT service providers. Based on the shifts in the technology purchasing environment, Constellation recommends four business models for Indian IT Services providers seeking to drive non-linear growth. Indian IT services firms can create high-volume, high-value opportunities for themselves by applying differentiated intellectual property (IP) creation, enabling disruptive technology-focused business models, delivering innovation value chains, and leading partner ecosystems, said R Ray Wang, CEO & principal analyst at Constellation Research.

The abundance of disruptive technologies in Cloud, Mobile, Social and Big Data presents tremendous opportunities for Indian IT firms to craft new business paradigms that expand the business and strengthens relationships with customers. Wang says, “Indian firms should now understand that their conventional business models have matured. Not only have their buyers’ technology challenges and priorities changed, their buyers’ profile itself is changing. Clients have moved way beyond mere staff augmentation, infrastructure, testing and advice. As long as IT services firms deliver on promised outcomes, clients do not care what database, hardware or internal middleware is used to deliver the solution.”